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October 25, 2017

USPTO News Briefs

In a Patent Alert e-mail distributed last month, the U.S. Patent and Trademark Office announced that it has released a beta version of the Citation List, as part of the Global Dossier Initiative. The Citation List service, which can be accessed here, provides a comprehensive listing of relevant citations in related applications that share a common priority claim. The Office noted that subsequent versions of the Citation List will introduce additional features, such as viewing the citation publication documents and incorporating additional data sources to enhance the comprehensiveness and consistency of citation data.

In the fall of 2015, the USPTO announced the launch of Dossier Access, the first of a set of business services to be developed as part of the Global Dossier Initiative (see "USPTO Launches Dossier Access"). The Global Dossier Initiative is a collaborative project of the IP5 Offices -- the European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), State Intellectual Property Office of the People's Republic of China (SIPO), and USPTO -- which aims to modernize the global patent system by providing a single portal/user interface for stakeholders.

USPTO Extends AFCP 2.0 and QPIDS Programs

In a Patent Alert e-mail distributed last month, the U.S. Patent and Trademark Office noted that both the After-Final Consideration Pilot 2.0 (AFCP 2.0) program and Quick Path IDS (QPIDS) pilot program have been extended to September 30, 2018.

The AFCP, which was implemented in April 2012 (see "USPTO to Assess After Final Consideration Pilot Program"), modified in May 2013 (see "USPTO News Briefs"), and extended since then provides examiners with a limited amount of non-production time -- three hours for utility and reissue applications -- to consider responses filed following a final rejection. The requirements for participating in the AFCP 2.0 are as follows:

(1) a transmittal form that requests consideration under AFCP 2.0 (the Office suggests that applicants use form PTO/SB/434); (2) a response under 37 CFR 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect; (3) a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response (according to the Office, "willing and available" means that the applicant is able to schedule the interview within ten (10) calendar days from the date the examiner first contacts the applicant); (4) any necessary fees (e.g., a request filed more than three months after the mailing of a final rejection must include the appropriate fee for an extension of time under 37 C.F.R. § 1.136(a)); and (5) the required papers must be filed via the EFS-Web.

Additional information regarding the AFCP 2.0 program can be found on the Office's AFCP 2.0 webpage.

The QPIDS pilot program, also implemented in 2012 (see "USPTO Announces Quick Path Information Disclosure Statement (QPIDS) Pilot Program") and extended since then, allows applicants to have an Information Disclosure Statement (IDS) considered after the issue fee has been paid and without having to file a Request for Continued Examination (RCE). To be eligible to participate in the pilot program, an application must be an allowed utility or reissue application for which the issue fee has been paid and the patent has not yet issued, and a QPIDS submission must be made electronically via the EFS-Web. A QPIDS submission must include the following:

• a transmittal form that designates the submission as a QPIDS submission (e.g., form PTO/SB/09); • an IDS accompanied by a timeliness statement set forth in 37 CFR 1.97(e), with the IDS fee set forth in 37 CFR 1.17(p); • a Web-based ePetition to withdraw from issue under 37 CFR 1.313(c)(2), with the petition fee set forth in 37 CFR 1.17(h); and • an RCE, which will be treated as a "conditional" RCE, with the RCE fee under 37 C.F.R. 1.17(e).

Additional information regarding the QPIDS pilot program can be found on the Office's QPIDS webpage.

Cash Not Accepted

Earlier this month, the U.S. Patent and Trademark Office published a notice in the Federal Register (82 Fed. Reg. 46042) noting that the USPTO will no longer accept cash as payment for products and services for which fees are required. The new policy will take effect on November 1, 2017. The notice indicates that the change is intended to streamline the fee collection process and implement the Department of the Treasury's directive to agencies to adopt a no-cash policy. The notice also indicates that in the past three fiscal years, the Office has collected at least $3 billion in net revenue each year, of which less than $14,000 per year has been in the form of cash payments.

USPTO Announces New EFS-Web and Private PAIR Feature

In a Patent Alert e-mail distributed last month, the U.S. Patent and Trademark Office announced that all EFS-Web-registered and Private PAIR users will now be able to file structured text via EFS-Web and access structured text submissions, structured text Office actions, and XML downloads via Private PAIR.

A Quick Start Guide for text intake in EFS-Web can be found here. According to the Guide, application parts can now be submitted in DOCX format. Additional requirements for such submissions can be found on page 6 of the Guide.

A Quick Start Guide regarding new Private PAIR enhancements can be found here. Among the enhancements will be the option to download XML or DOCX versions of PDF documents.

In a notice published in the Official Gazette earlier this month, the U.S. Patent and Trademark Office noted that the electronic retrievals of priority documents between the USPTO and the Japan Patent Office (JPO) will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS). For applications filed on or after October 1, 2017, Applicants who wish to have Japanese priority documents electronically retrieved must provide the WIPO DAS access code associated with the priority application along with the country, application number, and filing date of that application. For applications filed prior to October 1, 2017, the WIPO DAS access code will not be required, but the Office is encouraging applicants to voluntarily provide the WIPO DAS access code for Japanese priority documents. The certified copy requirement will be considered to be satisfied when a Japanese priority document is retrieved electronically via the WIPO DAS service during pendency of the U.S. application. According to the notice, the Office will include the WIPO DAS access code on filing receipts. The Office also reminds applicants that they bear the ultimate responsibility for ensuring that the priority document is filed by the time limit set forth in 37 C.F.R. § 1.55.